Ex Parte Hewett - Page 8

Appeal 2006-2827
Application 09/883,893
result.” Id. at 1739-40, 82 USPQ2d at 1395. It nevertheless rejected the
Government's claim that Adams' battery was obvious. In doing so, the Court
relied upon the corollary principle that when the prior art teaches away from
combining certain known elements, discovery of a successful means of combining
them is more likely to be nonobvious. Id. at 1740, 82 USPQ2d at 1395. (citing
United States v. Adams, 383 U.S. 39, 51-52 (1966)). Sakraida and Anderson’s-Black Rock are illustrative – a court must ask whether the improvement is more
that the predictable use of prior art elements according to their established
function.” Id.
ANALYSIS
A.Rejection of claims40-45 and 54 under 35 U.S.C. § 103(a) asunpatentable over Yates in view of Wilson.
The Examiner found that it would have been obvious for one to mount a
combination tissue dispenser and disposal on a shower wall as taught by Wilson,
“because Wilson protects the tissue from shower spatter, persons often have runny
or congested noses needing clearing while in the shower or persons need tissues for
localized cleaning while in the shower” (Answer 5-6). The only discussion of
“persons often have runny or congested noses needing clearing while in the shower
or persons need tissues for localized cleaning while in the shower,” as cited by the
Examiner, appears not in the prior art but in the Specification. See, e.g.,
Specification, 1:15-18 (“Use of these tissues in the dry areas of the bathroom does
not result in the most effective cleansing of the nasal passages, because the mucus
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